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Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpu243, first published online: January 12, 2015

This case concerns mainly the issue of whether it is sufficient to hold oneself out as being the author in order to be entitled to copyright protection when the authorship is not disputed or, on the contrary, if there is a need, even without dispute, to prove a creation process.

Legal context

The case applies copyright law to works of applied arts and states that the judge has to identify the author in the case of a claim of infringement or of allegation of unfair competition.

Facts

Mr Rautureau and the Rautureau Apple Shoes company (the claimants) stated that in 1982 Mr Rautureau created shoes with a special sliding system for the opening which was marketed under the mark POM D’API (now owned by Rautureau Apple Shoes), and also that in 2003 Mr Rautureau created a shoe called ROCK PERFECTO, as proven by a report of creation made by a bailiff in January 2004. Mr Rautureau sold his property right to Rautureau Apple Shoes, which marketed it under different marks.

The Court was provided with evidence showing that the company Sonia Rykiel sold shoes which were held to have infringed Rock Perfecto. It was then claimed on the basis of various documents, including some previous litigation, that Mr Rautureau was the author of the ROCK PERFECTO shoe.

Sonia Rykiel disputed this on the basis that no document was provided concerning the creation process of the shoe, and that the bailiff's report in 2004 did not prove authorship. The claimants maintained that the shoe was original on account of the combination of various features of the shoe. They added that the shoe was made publicly available under various guises starting in 2004, and that the reflection of the personality of its author stems from this combination of features which were not necessary for the purpose of making a boot. Finally, they added that no prior work of this type existed.

The originality of the work was disputed by Sonia Rykiel based on the fact that combination of known features does not prove a creative process even if the combination is new and even if no identical prior art/work exists. In addition, Sonia Rykiel claimed that the ROCK PERFECTO shoe had been a popular line of shoes in the 1950s/60s.

Discussion then shifted to the issue of infringement and, as usual, one party submitted that there were similarities between some features of the work, while the other emphasized the differences and the fact that the similarities evoked were commonplace and not protectable by copyright.

The final claim was based upon an assertion of unfair competition made by Sonia Rykiel when using an iconic Rautrureau shoe for its own 2012/13 collection.

The court initially sought to ascertain if Mr Rautureau was the author of the work, since he held himself out as being the person under whose name the work was publicly marketed. According to the court, neither the press articles nor the bailiff report of 2004 established that fact, even if Mr Rautureau submitted to the bailiff that he had designed and created the work and had sold the right to Rautureau Apples Shoes.

The court stated that, even if the bailiff had received a personal statement, he had not witnessed the specified creation process in that Mr Rautureau did not file any drawing, design or document showing the creation process. The declaration submitted to the bailiff was thus not a making public under Mr Rautureau's name and, if Mr Rautureau was the shoe's creator, he had not proven it, even if no one had disputed that he was the author of this specific model. As a consequence, since he was not considered as being the author, his claim was inadmissible. In contrast, Rautureau Apple Shoes' standing to sue was accepted since the company had marketed the ROCK PERFECTO shoes under various trade marks.

The court then analysed the originality of the creation, ie the model of the shoe. The plaintiff described the various features of the boot and claimed that their non-necessary combination was an aesthetic choice, notably by having arbitrarily chosen to mix a horsehoof heel with the triangular side profile and the pointed toe. Thus not only was the combination new but, according to the court, this combination proved that it was the result of choice and was therefore original.

Sonia Rykiel proved that the zipper used on the ROCK PERFECTO was not new by showing a boot designed in the 1970s. Nevertheless, the earlier boot had a rounded toe, unlike the pointed tip of the ROCK PERFECTO. The discussion continued, on the basis of other earlier shoes, showing some elements close to the that existing in the ROCK PERFECTO and that those shoes had been inspired by the ‘winklepickers’ which were popular in England in the 1950s/60s even though they had no zipper. Finally, Sonia Rykiel argued that the ROCK PERFECTO shoe was a low boot following an existing trend. The court found that there was no evidence to establish that the ROCK PERFECTO shoe had been fully anticipated and that, in addition, some documents submitted in support of the anticipation of that design were not dated.

Given the lack of a document proving the existence of prior art just in a single anteriority, Sonia Rykiel could not claim that the use of a zipper, which had already been used on a boot with a rounded toe, on a boot with a pointed toe, was the only addition created by the plaintiff and thus disprove the originality of the work.

Taking all those elements into consideration, the court decided that the combination of the features was the result of an arbitrary choice. None of the elements were dictated by the function of the shoe. Therefore the overall impression was that the shoe had individuality which demonstrated an aesthetic choice and bore the personality of the author. The shoe was therefore protectable as a copyright work.

The court then compared the two shoes. This was done on a feature-by-feature basis. The court found that, even if both shoes did have common features, the Sonia Rykiel shoe did not copy the original combination claimed by the plaintiff, and therefore did not infringe it.

The final portion of the case concerned the claim for unfair competition, this being a tort action based on Article 1382 of the French Civil Code. The appreciation of the wrong is made in concreto by considering whether there is a slavish copy, repetition of the reproduction, length of use and originality and well-known nature of the copied product. The court decided that the two shoes had significant differences. This excluded any likelihood of confusion and the unfair competition claim. Accordingly, the claim was dismissed.

Analysis

This case is important since it confirms the direction taken by a recent trend of the French court which is not to take authorship and originality for granted.

The usual practice concerning authorship, as claimed by Mr Rautureau, was that the person who publicly unveiled a work was considered to be its author. Authorship could be disputed only if another party claimed it. In that case, the company created by Mr Rautureau did not dispute his authorship. Nevertheless, the court found that there was insufficient evidence of the creation and of making it public by Mr Rautureau to accept that he was the author.

The discussion on originality was surprising, even if the work for which protection was claimed was a work of applied art. The wording of the decision shows that the court took into consideration the date of the prior art invoked as well as sought to establish if any document or evidence showing full anteriority had been provided.

When examining the discussion of the features, their combination and the research of prior art, one has the impression of dealing with a patent decision and reading a discussion about the lack of novelty or of inventive step rather than a copyright decision.

It is true that it is difficult to prove that a work is the expression of the personality of its author as required by the French case law especially for works of applied art.

Practical significance

This case is important because it builds on a recent decision of the French Supreme Court (Civ 1er, 14 November 2014, No 12-20.687) which confirmed that, in order to claim to have created an original work, one needs to demonstrate originality. Going further, this first-instance decision increases the burden of proof of the individual claiming to be the author of a work of art. Making a declaration before a bailiff (ie an officer of the court) at the time of the creation is not enough, and additional elements must be provided, such as drawings. In the paperless age, where everything is computerized but can also be tampered with, one needs to find new ways of proving individual authorship

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